Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1183997
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`Filing date:
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`01/12/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`92057016
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`Party
`
`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Attachments
`
`Plaintiff
`Galperti, Inc.
`
`JENNIFER S SICKLER
`HOLLAND & KNIGHT LLP
`811 MAIN STREET, SUITE 2500
`HOUSTON, TX 77002
`UNITED STATES
`Primary email: jennifer.sickler@hklaw.com
`Secondary email(s): TDavis@kilpatricktownsend.com, BRNel-
`son@kilpatricktownsend.com, Bryan.bustamente@hklaw.com
`713-653-8111
`
`Other Motions/Submissions
`
`Jennifer S. Sickler
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`jennifer.sickler@hotmail.com
`
`/Jennifer S. Sickler/
`
`01/12/2022
`
`Galperti Inc. Motion for Supplemental Briefing on Second Remand NON-C ON-
`FIDENTIAL VERSION.pdf(229741 bytes )
`Exhibit A to Galperti Inc. Motion.pdf(210632 bytes )
`Exhibit B to Galperti Inc. Motion.pdf(430241 bytes )
`Exhibit C to Galperti Inc. Motion.pdf(554637 bytes )
`Exhibit D to Galperti Inc. Motion.pdf(129593 bytes )
`Exhibit E to Galperti Inc. Motion.pdf(272729 bytes )
`Exhibit F to Galperti Inc. Motion.pdf(570296 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Petitioner,
`
`
`GALPERTI, INC.,
`
`
`
` v.
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` GALPERTI S.R.L,
`
`
`
`
`
`
`Respondent.
`
`
`
`
`
`
`Cancellation No. 92057016
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`
`
`
`
`
`
`
`
`
`PETITIONER’S MOTION FOR SUPPLEMENTAL BRIEFING ON REMAND, NOTICE
`OF SUPPLEMENTAL AUTHORITY, AND REQUEST FOR ORAL ARGUMENT
`
`NON-CONFIDENTIAL VERSION
`
`Petitioner Galperti, Inc. respectfully moves the Board to allow supplemental briefing on
`
`
`
`the issue of the fraudulent procurement by Respondent Galperti S.R.L. of the registration under-
`
`lying this proceeding. That supplemental briefing is appropriate in light of:
`
`•
`
`•
`
`the Federal Circuit’s November 12, 2021, opinion in Galperti, Inc. v. Galperti S.r.l., 17
`
`F.4th 1144 (Fed. Cir. 2021), in which that court vacated the August 4, 2020, dismissal of
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`the petition for cancellation;1 and
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`the Board’s precedential opinions in Chutter, Inc. v. Great Management Group v. Great
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`Concepts, LLC, 2021 U.S.P.Q.2d 1001 (T.T.A.B. 2021), appeal docketed, No. 22-1212
`
`(Fed. Cir. Nov. 30, 2021), Fuji Medical Instruments Manufacturing Co. v. American Croc-
`
`
`1 Although the Federal Circuit’s mandate issued on December 20, 2021, its November 12, 2021,
`opinion does not yet appear in TTABVUE. This motion therefore attaches the slip opinion as Ex-
`hibit A and provides citations to both it and to the version of the opinion appearing in the Federal
`Reporter.
`
`
`
`1
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`

`

`odile International Group, 2021 U.S.P.Q.2d 831 (T.T.A.B. 2021), and DrDisabil-
`
`ityQuotes.com, LLC v. Krugh, 2021 U.S.P.Q.2d 262 (T.T.A.B. 2021), all of which directly
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`bear upon the test for fraudulent filings and all of which have issued since the trial and the
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`first remand in this matter.
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`In the alternative, and pursuant to TBMP § 528.05(a)(1), Petitioner calls the Board’s attention to
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`the opinions in Chutter, Fuji Medical Instruments, and DrDisabilityQuotes.com as supplemental
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`authority directly relevant to the remaining issues in this matter. Finally, Petitioner requests oral
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`argument on those issues.
`
`Numerical information designated as Confidential by Respondent has been redacted on
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`pages 3 and 10 herein.
`
`I.
`
`
`
`Procedural Background
`
`Petitioner filed this cancellation proceeding on April 4, 2013, alleging, inter alia, that the
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`Board should cancel the registration of Respondent’s GALPERTI surname mark because Re-
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`spondent obtained that registration by fraud. Specifically, Petitioner argues that Respondent’s
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`claim of acquired distinctiveness under Section 2(f) of the Lanham Act and 37 C.F.R. § 2.41(a)(2)
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`was fraudulent because Respondent falsely averred on September 26, 2007, that it had made “sub-
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`stantially exclusive and continuous use” of its mark for the previous five years. 21 TTABVUE 3-
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`4.2 The falsity of that claim arose from the significantly greater scope of operations under the same
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`GALPERTI mark for the same goods by Petitioner and its affiliates, a circumstance admittedly
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`known to Respondent at the time of its Section 2(f) declaration. Indeed, based on her attendance
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`
`2 The operative pleading, the Second Amended Petition for Cancellation, 21 TTABVUE, also as-
`serted that the registration should be cancelled under Section 2(d) based on Petitioner’s prior use
`of the same mark for identical goods and, additionally, because Respondent had procured its reg-
`istration by fraudulently claiming ownership of the registered mark. Those grounds for cancella-
`tion no longer are in the case.
`
`
`
`2
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`

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`during an earlier state-court infringement action between the parties, Respondent’s principal con-
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`ceded the following under oath in this proceeding:
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`QUESTION – Is it not true that [in] . . . the State Court Litigation transcript, you described
`[Respondent] as “maybe {numbers redacted} the size of the plaintiffs in the State Court
`Litigation [Petitioner and one of its affiliates]?
`
`. . . .
`ANSWER – I confirm this declaration. The proportions indicated were true at the time [i.e.,
`in 2006], according to my knowledge . . . .
`
`
`82 TTABVUE 15
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`
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`Following trial, the Board found on August 31, 2018, that Respondent’s principal knew of
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`those directly competitive uses and that Respondent’s averment of substantially exclusive use was
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`material to the issuance of Respondent’s registration. 100 TTABVUE 57-57, 58, 59. Citing L.D.
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`Kichler Co. v. Davoil Inc., 192 F.3d 1349 (Fed. Cir. 1999), the Board concluded that Respondent’s
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`averment of substantially exclusive use was not false because “the five years of use does not have
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`be exclusive, thereby making an allowance for some use by unrelated third parties.” 100
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`TTABVUE 59. The Board did not, however, evaluate the significance of Petitioner’s evidence of
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`its own use and that of its affiliates in its falsity inquiry. Moreover, because of its conclusion as to
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`falsity, the Board did not reach the question of Respondent’s intent to deceive the Office.
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`On November 13, 2019, the Federal Circuit vacated and remanded the Board’s August 31,
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`2018, order. See Galperti, Inc. v. Galperti S.r.l., No. 2019-1150, 2019 WL 6002062 (Fed. Cir.
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`Nov. 13, 2019), reproduced at 107 TTABVUE. That opinion determined, inter alia, that:
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`• prior to the filing of Respondent’s application, “[Petitioner] and [Respondent] were in-
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`volved in a trademark dispute in Texas, which specifically related to both parties’ usage of
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`the GALPERTI mark,” 107 TTABVUE 7;
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`• “Ms. Dina Galperti, Managing Director of [Respondent], was deposed in connection with
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`that litigation and gave testimony that confirmed her awareness of [Petitioner] and its use
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`
`
`3
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`

`

`of the mark,” 107 TTABVUE 7; and
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`• “As the Board correctly concluded, Ms. Galperti and [Respondent] were ‘well aware of’
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`[Petitioner], its use of the GALPERTI mark, and its ‘presence in the U.S. marketplace.’”
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`107 TTABVUE 8.
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`Based in part on those determinations, all of which are now law of the case, see LaShawn A. v.
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`Barry, 87 F.3d 1389, 1395 n.7 (D.C. Cir. 1996) (en banc), the court instructed the Board to take
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`the “necessary[] step [of] analyzing whether [Petitioner’s] use of the mark was ‘significant’ enough
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`to make [Respondent’s] claim false, or whether it was ‘inconsequential’ such that [Respondent’s]
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`claim of ‘substantially exclusive’ use was not false.” 107 TTABVUE 8-9.
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`
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`On August 4, 2020, the Board once again found that Respondent’s averment of substan-
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`tially exclusive use was not false based on Petitioner’s perceived failure to demonstrate:
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`• privity between itself and other users of “Galperti,” 110 TTABVUE 10-11, 17; and
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`• a proprietary interest in the surname “Galperti” as a trademark through a showing of sec-
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`ondary meaning. 110 TTABVUE at 17.
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`Without addressing Respondent’s concession that other parties’ operations under “Galperti” names
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`were many orders of magnitude greater than Respondent’s own, the Board thus deemed Peti-
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`tioner’s own use “inconsequential.” Id.
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`
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`Petitioner timely noticed an appeal from the Board’s August 4, 2020, order, and the Federal
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`Circuit vacated and remanded that order in its second opinion.
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`That second opinion has clar-
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`ified the correct standard for substantially exclusive use in the determination of whether a Section
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`2(f) declaration is false. With respect to the relationship between substantially exclusive use and
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`the secondary meaning attached to a plaintiff’s own use of the same mark, the court held:
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`[E]ven marketplace uses of a term lacking secondary meaning for the users are among the
`uses that legitimately play that role. After all, a significant amount of marketplace use of a
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`
`
`4
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`

`

`term not as a source identifier for those users does tend to undermine an applicant’s asser-
`tion that its own use has been substantially exclusive so as to create a prima facie case that
`the term has come to acquire distinctiveness as a source identifier for the applicant. An
`applicant’s assertion that it has attained the status of recognition as the source of goods
`carrying a given mark is not undermined only by uses made by another person that has
`attained that status for itself.
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`Slip op. at 7, 17 F.4th at 1148. Thus, “[Petitioner] does not need to establish secondary meaning
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`of its own uses of GALPERTI in order for those uses to be counted in determining the falsity of
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`[Respondent’s] claim of substantially exclusive use.” Id. at 8-9, 17 F.4th at 1149.
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`
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`With respect to the need for a plaintiff asserting falsity in the Section 2(f) context to demon-
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`strate privity among other users of the same designation, the court then concluded that “[u]se by
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`anyone, regardless of relation to the challenger, may undercut a claim of substantially exclusive
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`use. This straightforward point is reflected in our prior opinion in the present matter, where we
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`said that ‘any use by a third party’ could be significant.” Id. at 9, 17 F.4th at 1149. Like the Board’s
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`two orders and the court’s first opinion, the court’s second opinion did not address the issue of
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`Respondent’s scienter. Id., 17 F.4th at 1149.
`
` II.
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`The Board’s Intervening Case Law
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`
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`A.
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`Intent
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`The Federal Circuit’s clarification of the test for substantially exclusive use under Section
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`2(f) is not the only change of law to take place since the trial of this matter. Importantly, the Board
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`has recently clarified the test for intent in the fraudulent procurement context in Chutter, Inc. v.
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`Great Management Group, 2021 U.S.P.Q.2d 1001 (T.T.A.B. 2021), in a manner also meriting
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`supplemental briefing.
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`
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`The claim of fraud in Chutter arose from the counterclaim respondent’s filing of a false
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`declaration of incontestability under Section 15 of the Act, 15 U.S.C. § 1065. The declaration’s
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`
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`5
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`

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`falsity was not in dispute, and the Board found the counterclaim respondent had acted with a fraud-
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`ulent intent after reaching several holdings with significance to this action, one of which is that an
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`intent to deceive the Office can take the form of a reckless disregard of the truth:
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`A declarant is charged with knowing what is in the declaration being signed, and
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`by failing to make an appropriate inquiry into the accuracy of the statements the declarant
`acts with a reckless disregard for the truth. . . .
`
`To find otherwise could encourage declarants to conclude that such disregard car-
`ries no consequence and they can fail to read documents they are signing without penalty. .
`. .
`
`
`2021 U.S.P.Q.2d 1001, at *20.
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`
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`Another holding in Chutter with relevance to this case is that ignorance of the requirements
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`of a declaration will not preclude a finding of such a reckless disregard of the truth, even if that
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`ignorance results from a failure to read the declaration. Id. at *19 (“By failing to ascertain and
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`understand the import of the document he was signing, far from conscientiously fulfilling his du-
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`ties as counsel, [the signatory] acted in reckless disregard for the truth . . . . [The signatory] was
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`especially reckless because he was admittedly unfamiliar with the requirements for filing a Section
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`15 Declaration.”). Likewise, the Board also held that a failure to take remedial actions once a false
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`declaration is called to the declarant’s attention is further evidence of a fraudulent intent. See id.
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`at *26 (“Even after opposing counsel in these proceedings brought the incorrect filing to Defend-
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`ant’s attention, neither Defendant, [Defendant’s signatory], nor anyone else, took any remedial
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`steps. This leads us to find that [the signatory] intended to file just what he filed, regardless of its
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`accuracy.” (footnote omitted)). Here, Respondent has argued misleadingly that it had no fraudulent
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`intent due to its subjective belief that its use was exclusive because it had allegedly prevailed in a
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`
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`6
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`

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`state court case between the parties regarding the GALPERTI Mark. But Chutter definitively con-
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`firms the irrelevance of such a consideration.3
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`
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`Finally, both in Chutter and in another intervening decision, namely, Fuji Medical Instru-
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`ments Manufacturing Co. v. American Crocodile International Group, 2021 U.S.P.Q.2d 831
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`(T.T.A.B. 2021), the Board confirmed that the filing of a false statement by an attorney will not
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`preclude a finding of fraudulent intent, even if, as in Fuji Medical Instruments, the knowledge of
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`the falsity lies with a registrant, and not the attorney. See Fuji Med. Instruments, 2021 U.S.P.Q.2d
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`831, at *32 ((“The fact that Respondent’s attorney signed the . . . declaration does not relieve [the
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`president] of his duty to state the truth.”). The Board therefore should not entertain Respondent’s
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`past arguments regarding intent without supplemental briefing on the significance of these inter-
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`vening precedential decisions.
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`
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`
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`B. Materiality
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`The Board’s first order found Respondent’s claim of substantially exclusive use under 37
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`C.F.R. § 2.41(a)(2) material to the issuance of Respondent’s registration, 100 TTABVUE 56-57;
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`Respondent did not cross-appeal that finding, thereby waiving any objections Respondent may
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`have to it now. In any case, the but-for materiality of that claim cannot be disputed because of the
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`
`3 Of course, that consideration is equally irrelevant to the falsity inquiry because it confuses the
`oath required by Section 1(a)(3)(D) of the Lanham Act, with the statement under Section 2(f) at
`issue here. Were Petitioner pursuing a claim of a fraudulent declaration under Section 1(a)(3)(D),
`Respondent’s alleged belief in its claimed superior rights might be relevant in light of that section’s
`qualifying “to the best of the verifier’s knowledge and belief” language. Section 2(f) lacks similar
`language, however, which means:
`The declaration oath … is different from a Section 2(f) “substantially exclusive” use state-
`ment. An examination of the declaration oath focuses on the declarant’s subjective belief,
`while [a] Verified Statement (pursuant to Section 2(f)) [of substantially exclusive use] de-
`pends upon his knowledge.
`On Site Energy Co. v. MTU Onsite Energy Corp., No. 10-CV-1671(JS)(WDW), 2013 WL
`3990919, at *6 (E.D.N.Y. Aug. 2, 2013) (emphasis added) (citation omitted) (copy attached as
`Exhibit B).
`
`
`
`7
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`

`

`examining attorney’s failure even to acknowledge, much less accept, Respondent’s separate and
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`independent attempted showing under 37 C.F.R. § 2.41(a)(3).4 Indeed, under the Board’s inter-
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`vening decision in DrDisabilityQuotes.com, LLC v. Krugh, 2021 U.S.P.Q.2d 262 (T.T.A.B. 2021),
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`materiality can be presumed. Id. at *11-12.
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`
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`Moreover, to the extent the Board is inclined to revisit the issue, it should not do so without
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`supplemental briefing on Fuji Medical Instruments’ clarification of the test for materiality. That
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`intervening decision has loosened the traditional but-for standard for materiality in favor of a more
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`flexible one, namely, that “information is material when a reasonable examiner would consider it
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`important in deciding whether to allow the application to issue.” Fuji Med. Instruments, 2021
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`U.S.P.Q.2d 831, at *23 (alteration omitted) (quoting Symantec Corp. v. Comput. Assocs. Int’l, Inc.,
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`522 F.3d 1279, 1297 (Fed. Cir. 2008)). Clearly, a reasonable examiner would consider evidence
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`of the nonexclusive use of an applied-for mark important to his or her acceptance of a claim of
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`substantially exclusive use.
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`III.
`
`Supplemental Briefing Will Assist the Board in Analyzing Petitioner’s Fraudulent
`Procurement Claim
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`
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`The Federal Circuit’s opinion makes clear the importance of analyzing falsity based on all
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`other uses of “Galperti” in the industry, regardless of whether those uses have achieved secondary
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`meaning and regardless of the relationship between the other users. Based both on that clarification
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`and the absence of any other outstanding claims or defenses in the case, Petitioner respectfully
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`4 If the sole basis of the USPTO’s finding of secondary meaning is a Section 2(f) statement under
`37 C.F.R. § 2.41(a)(2), the accuracy of that statement is undeniably material to the mark’s regis-
`tration. See, e.g., Anello Fence, LLC v. VCA Sons, Inc., No. 13-3074 (JMV) (JBC), 2019 WL
`351899, at *15 (D.N.J. Jan. 28, 2019) (reaching findings of fraudulent procurement as a matter of
`law based on registrant’s inaccurate Section 2(f) declarations under 37 C.F.R. § 2.41(a)(2)) (copy
`attached as Exhibit C), reconsideration denied, No. 13-3074 (JMV) (JBC), 2019 WL 4894562
`(D.N.J. Oct. 3, 2019), appeal docketed, No. 19-3578 (3d Cir. Nov. 7, 2019).
`
`
`
`8
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`

`

`submits that the Board will benefit from additional briefing focused on the narrow issue of Re-
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`spondent’s fraudulent Section 2(f) filing.
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`
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`Supplemental briefing upon remand is not unusual. For example, the Federal Circuit rou-
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`tinely orders supplemental briefing following vacaturs and remands from the Supreme Court. See,
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`e.g., SIPCO, LLC v. Emerson Elec. Co., 980 F.3d 865, 867 (Fed. Cir. 2020); Amgen Inc. v. Sandoz
`
`Inc., 877 F.3d 1315, 1320 (Fed. Cir. 2017); Litton Sys., Inc. v. Honeywell, Inc., 118 F.3d 746 (Fed.
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`Cir. 1997); Hughes Aircraft Co. v. United States, 116 F.3d 453, 454 (Fed. Cir. 1997). Likewise,
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`district courts have long recognized the value of allowing (or even ordering) parties to file addi-
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`tional submissions on remand in the regional circuits. See, e.g., United States v. Clarke, 816 F.3d
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`1310, 1314 (11th Cir. 2016) (noting that the district court had allowed the parties to rebrief their
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`arguments under the standard articulated by the Supreme Court and by the Eleventh Circuit on
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`appeal); In re Wells Fargo Home Mortg. Overtime Pay Litig., 268 F.R.D. 604, 606 (N.D. Cal.
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`2010) (referencing prior order requiring rebriefing following remand).
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`
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`Indeed, the Board has itself sua sponte ordered supplemental briefing in cases remanded
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`from the Federal Circuit. Thus, for example, in Frito-Lay North America, Inc. v. Princeton Van-
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`guard, LLC, 124 U.S.P.Q.2d 1184 (T.T.A.B. 2017), the Board ordered additional briefs to ensure
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`it could “correctly assess” the case after a remand by having the parties discuss “the critical evi-
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`dence of record relevant to the legal standard set forth by the [Federal Circuit].” Frito-Lay N. Am.,
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`Inc. v. Princeton Vanguard, LLC, No. 91195552, 70 TTABVUE 2 (T.T.A.B. Sept. 24, 2015); see
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`also Metro Traffic Control, Inc. v. Shadow Network, Inc., No. 19291, 1998 WL 215719, at *2
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`(T.T.A.B. Apr. 29, 1998) (noting prior order requesting supplemental briefing on the “issues iden-
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`tified by the [Federal Circuit]”); cf. JIPC Mgmt., Inc. v. Incredible Pizza Co., No. 91170452, 2017
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`9
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`

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`WL 6939357, at *2 (T.T.A.B. Dec. 29, 2017) (referencing supplemental briefing ordered to ad-
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`dress developments in civil action between parties).5
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`
`
`Having previously recognized the value of supplemental briefing in framing the parties’
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`arguments and evidence upon remand, and consistent with the Federal Circuit’s own practice, the
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`Board should allow it in this case. In particular, the Board should consider additional submissions
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`addressing Petitioner’s evidence of falsity—which includes the heretofore unaddressed concession
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`by Respondent’s principal that the operations of other “Galperti” companies were a remarkable
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`{numbers redacted} times larger than those of her own company—independent of any perceived
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`requirement that those uses have themselves acquired secondary meaning or that they are in privity
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`with each other (as instructed by the Federal Circuit). The Board also should accept supplemental
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`briefing on the Board’s new test for intent in light of the Federal Circuit’s recognition of Respond-
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`ent’s knowledge of other parties’ use of “Galperti,” Respondent’s failure to correct the examiner’s
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`mistaken belief that a website of Petitioner’s affiliate was that of Respondent, and the representa-
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`tion by Respondent’s counsel that verification of Respondent’s claim of substantially exclusive
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`use appeared in a declaration, when, in fact, it did not. 107 TTABVUE 7-8; March 24, 2007, Non-
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`Final Office Action at 2, 7; Sept. 26, 2007, Response to Non-Final Office Action at 3, 9-10.
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`IV. Conclusion
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`
`
`For the reasons set forth above, Petitioner respectfully requests the Board to set a briefing
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`schedule allowing the Parties to address the issue of fraud in light of the Federal Circuit’s clarifi-
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`cation of the standard for falsity, the Board’s intervening decisions in Chutter, Fuji Medical In-
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`struments, and DrDisabilityQuotes.com, and the absence of a prior finding by the Board on the
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`issue of scienter. Finally, Petitioner also requests oral argument on those issues.
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`
`5 Copies of these opinions are attached as Exhibits D, E, and F.
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`
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`10
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`

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`Date: January 12, 2022
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`
`
`Respectfully submitted,
`
`Respectfully submitted,
`
`/s/Theodore H. Davis Jr.
`Theodore H. Davis Jr.
`Bethany Nelson
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, GA 30309-4528
`(404) 815-6500
`
`
`/s/ Jennifer S. Sickler
`Jennifer S. Sickler
`Melissa Davis Andrews
`Holland & Knight LLP
`811 Main Street, Suite 2500
`Houston, TX 77002
`(713) 653-8611
`
`Attorneys for Petitioner Galperti, Inc.
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`11
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`CERTIFICATE OF SERVICE
`
`This is to certify that on the 12th day of January 2022, a true and correct copy of the Peti-
`tioner's Motion for Supplemental Briefing on Remand, Notice of Supplemental Authority, and
`Request for Oral Argument, Non-Confidential Version, has been served on the following counsel
`for Respondent by email, per the parties agreement to service by email, and through the ESTTA
`electronic filing system:
`
`Mr. Paolo A. Strino
`Mr. J. Brugh Lower
`Ms. Wendy Stein
`Gibbons P.C.
`One Pennsylvania Plaza, 37th Floor
`New York, NY 10119
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`Email: pstrino@gibbonslaw.com
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`JLower@gibbonslaw.com
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`wstein@gibbonslaw.com
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`/s/ Jennifer S. Sickler
`Jennifer S. Sickler
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`CERTIFICATE OF CONFERENCE
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`I hereby certify that on January 5 and 10, 2022, counsel for Petitioner conferred with Re-
`spondent’s counsel via email regarding this Motion. Respondent's counsel advised that they op-
`pose the Motion.
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`/s/ Jennifer S. Sickler
`Jennifer S. Sickler
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`12
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`Case No. 92057016
`Case No. 92057016
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Case: 21-1011 Document: 37 Page: 1 Filed: 11/12/2021
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`GALPERTI, INC.,
`Appellant
`
`v.
`
`GALPERTI S.R.L.,
`Appellee
`______________________
`
`2021-1011
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Trademark Trial and Appeal Board in No.
`92057016.
`
`______________________
`
`Decided: November 12, 2021
`______________________
`
`THEODORE H. DAVIS, JR., Kilpatrick, Townsend &
`Stockton LLP, Atlanta, GA, argued for appellant. Also rep-
`resented by BETHANY R. NELSON; MELISSA DAVIS, JENNIFER
`S. SICKLER, Thompson & Knight LLP, Houston, TX.
`
` PAOLO STRINO, Gibbons P.C., New York, NY, argued for
`appellee. Also represented by JONATHON BRUGH LOWER,
`Newark, NJ.
`
`______________________
`
`Before MOORE, Chief Judge, PROST and TARANTO, Circuit
`Judges.
`
`

`

`Case: 21-1011 Document: 37 Page: 2 Filed: 11/12/2021
`
`2
`
`GALPERTI, INC. v. GALPERTI S.R.L.
`
`TARANTO, Circuit Judge.
`
`In September 2007, Galperti S.r.l. (Galperti-Italy), to
`support its application to the Patent and Trademark Office
`(PTO) for registration of the mark GALPERTI, told the
`PTO that, in the five preceding years, its use of the mark
`was “substantially exclusive.” In 2008, the PTO granted
`the application and issued Registration No. 3411812. In
`2013, Galperti, Inc. (Galperti-USA) petitioned the PTO to
`cancel the registration, arguing, among other things, that
`the registration was obtained by fraud because Galperti-
`Italy’s 2007 statement of substantially exclusive use was
`false and, indeed, intentionally so. When the PTO’s Trade-
`mark Trial and Appeal Board dismissed the cancellation
`petition, we affirmed as to the non-fraud issues but vacated
`the Board’s rejection of the fraud charge and remanded for
`further consideration of that charge. Galperti, Inc. v.
`Galperti S.r.l., 791 F. App’x 905 (Fed. Cir. 2019) (2019
`CAFC Op.). On remand, the Board again dismissed the
`fraud claim, again finding no proven falsity of the state-
`ment at issue (and again not reaching the intent aspect of
`fraud). Galperti, Inc. v. Galperti S.r.l., Cancellation No.
`92057016 (TTAB Aug. 4, 2020) (2020 Board Op.). Now, on
`Galperti-USA’s second appeal, we hold that, in finding no
`falsity of Galperti-Italy’s assertion of substantially exclu-
`sive use from 2002 to 2007, the Board committed two legal
`errors: requiring Galperti-USA to establish its own propri-
`etary rights to the mark and disregarding use of the mark
`by others during the period at issue. We vacate the Board’s
`decision and remand for further consideration.
`
`I
`
`Galperti-USA, a Texas corporation, and Galperti-Italy,
`an Italian limited liability company, are legally unrelated
`companies, both of which manufacture and sell metal
`flanges and related products. On April 15, 2008, Galperti-
`Italy obtained a trademark registration for the mark
`GALPERTI for “[i]ronmongery in the form of metal
`
`

`

`Case: 21-1011 Document: 37 Page: 3 Filed: 11/12/2021
`
`GALPERTI, INC. v. GALPERTI S.R.L.
`
`3
`
`hardware, namely, flanges, ring-shaped fittings of metal,
`and forgings.” 2020 Board Op. at *1–2. The registration
`claims a priority date of September 28, 2006, based on Ital-
`ian registration application No. MI2006C009605.
`
`It is common ground here that GALPERTI is “primar-
`ily merely a surname” and, so, without more, could not be
`registered. Lanham Act § 2(e)(4), 15 U.S.C. § 1052(e)(4).
`Here, Galperti-Italy obtained a registration of GALPERTI
`on the Principal Register under Section 2(f) of the Lanham
`Act, which, even for a mark that is “primarily merely a sur-
`name,” allows registration if the mark “has become distinc-
`tive of the applicant’s goods in commerce” and allows the
`PTO to “accept as prima facie evidence” of such acquired
`distinctiveness “proof of substantially exclusive and contin-
`uous use thereof as a mark by the applicant in commerce
`for the five years before the date on which the claim of dis-
`tinctiveness is made.” 15 U.S.C. § 1052(f). The PTO ini-
`tially rejected Galperti-Italy’s application on the ground
`that the mark GALPERTI was not registrable because it
`was primarily just a surname. J.A. 51; see Lanham Act
`§ 2(e)(4), 15 U.S.C. § 1052(e)(4). On September 26, 2007,
`Galperti-Italy responded by asserting, in reliance on the
`Section 2(f) proof standard for acquired distinctiveness:
`“The mark has become distinctive of the goods listed in the
`application through the Applicant’s substantially exclusive
`and continuous use in commerce for at least the five years
`immediately before the date of this statement.” J.A. 68.
`The registration subsequently issued.
`
`On April 4, 2013, within five years of the April 15, 2008
`registration, Galperti-USA petitioned to cancel the regis-
`tration under Section 14 of the Lanham Act, 15 U.S.C.
`§ 1064. Its amended petition in 2014 presented three
`grounds. First, Galperti-USA argued that its use of the
`GALPERTI mark predated Galperti-Italy’s relevant use of
`the mark and Galperti-Italy’s use was likely to cause con-
`fusion. See Lanham Act § 2(d), 15 U.S.C. § 1052(d). Sec-
`ond, Galperti-USA argued that Galperti-Italy obtained the
`
`

`

`Case: 21-1011 Document: 37 Page: 4 Filed: 11/12/2021
`
`4
`
`GALPERTI, INC. v. GALPERTI S.R.L.
`
`registration by fraud, namely, by intentionally making a
`false assertion of substantially exclusive use from 2002 to
`2007. See Lanham Act § 14(3), 15 U.S.C. § 1064(3) (cancel-
`lation available for registration “obtained fraudulently”);
`In re Bose Corp., 580 F.3d 1240, 1243 (Fed. Cir. 2009) (hold-
`ing that an applicant commits fraud when it knowingly
`makes false, material representations of fact with an intent
`to deceive the PTO). Third, Galperti-USA alleged that
`Galperti-Italy made a false claim of ownership, again in-
`voking fraud.
`
`After a trial, the Board deemed the ownership ground
`forfeited and rejected the other two grounds on the merits.
`Galperti-USA appealed the two merits rulings. We af-
`firmed the Board’s determination that Galperti-USA failed
`to demonstrate its prior use of the mark. 2019 CAFC Op.,
`791 F. App’x at 907–08.1 But we vacated the Board’s de-
`termination that Galperti-USA failed to prove the falsity,
`and hence failed to prove the fraudulent character, of
`Galperti-Italy’s 2007 assertion to the PTO that its use of
`the mark had been substantially exclusive in the preceding
`five years. Id. at 909–10. We explained that “when evalu-
`ating whether an applicant has had ‘substantially exclu-
`sive’ use of a mark, we look to whether any use by a third
`party was ‘significant,’ or whether it was merely ‘inconse-
`quential or infringing.’” Id. at 910 (quoting L.D. Kichler
`Co. v. Davoil, Inc., 192 F.3d 1349, 1352 (Fed. Cir. 1999)).
`While approving the Board’s conclusion that Galperti-It-
`aly’s mere “‘knowledge of other players in the market-
`place’” was insufficient to make its statement to the PTO
`“‘per se false,’” id., we held that the Board had erred in
`stopping at that point, because the absence of “per se”
`
`
`
`1 We also rejected Galperti-USA’s argument about
`
`prior trade-name use, affirming the Board’s determination
`that Galperti-USA had not properly preserved such a con-
`tention. 2019 CAFC Op., 791 F. App’x at 908–09.
`
`

`

`Case: 21-1011 Document: 37 Page: 5 Filed: 11/12/2021
`
`GALPERTI, INC. v. GALPERTI S.R.L.
`
`5
`
`falsity does not imply the absence of falsity, id. What was
`needed was an inquiry, on remand, into whether the uses
`to which Galperti-USA pointed as showing the falsity of
`Galperti-Italy’s representation to the PTO were significant
`or, instead, inconsequential. Id. In stating the remand in-
`struction, we referred to “Appellant’s use” (Galperti-USA
`being “Appellant”), id. (emphasis added), but given our
`statement of the legal standard in terms of “any use by a
`third party” and “other players in the marketplace,” id., the
`remand mandate could not be reasonably understood as
`limited to evidence of Galperti-USA’s own use, but required
`proper consideration of all the evidence presented of signif-
`icant (rather than inconsequential) use.
`
`On remand, the Board did not take an improper view
`of this court’s mandate. But it again found that Galperti-
`USA had failed to prove the significant, not inconsequen-
`tial, use that would make Galperti-Italy’s representation
`false. And in so finding, the Board stated two conclusions
`that are now at issue before us.
`
`First, the Board concluded that Galperti-USA “had to
`show it had obtained proprietary rights